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Why SCOTUS Myriad Ruling Overrules Chakrabarty

There are a great many people inside the patent industry that are working hard to convince themselves that the Supreme Court decision in Association of Molecular Pathology v. Myriad Genetics is not so bad. The argument goes that the Supreme Court explicitly stated that cDNA is patent eligible and that Chakrabarty remains good law. The trouble with both rationales is that they are incorrect.

It seems to me that anyone who tries to convince themselves that Myriad is anything other than a disaster is just fooling themselves. It does no good to put our heads in the sand and ignore what the Supreme Court said as if by doing so it will make a difference. Anyone who is honest with themselves knows how the district courts will interpret Myriad, and it will not be in a patentee friendly manner.

But before going to far, let me conclusively demonstrate with the Supreme Court’s own explicit language why those who are trying to convince themselves, and others, that the decision is workable are wrong.

First, with respect to cDNA, it has been widely reported and believed that the Supreme Court said cDNA is patent eligible. In fact, what the Supreme Court said is that some cDNA is specifically not patent eligible, which is a far cry from the blanket statement that some suggest is found in the decision. For example, the Supreme Court wrote:

cDNA is not a “product of nature” and is patent eligible under §101, except insofar as very short series of DNA may have no intervening introns to remove when creating cDNA. In that situation, a short strand of cDNA may be indistinguishable from natural DNA.

This clearly and unambiguously means that short strands of cDNA are not patent eligible. So can we please dispense with the inaccurate and rather ridiculous interpretation of this case as being a blanket endorsement of cDNA as patent eligible? Clearly that is not what the Supreme Court said. The opinion goes to great length to explain that cDNA is nonnaturally occurring, is not a product of nature, but still some cDNA sequences that are created by man are not going to be patent eligible if they are “indistinguishable from natural DNA.”

This also offers our first clue as to why the Myriad decision overrules Chakrabarty. In Diamond v. Chakrabartythe Supreme Court held that living matter is patentable eligible if it is created by man. The Supreme Court in Chakrabarty explained:

[R]espondent’s micro-organism plainly qualifies as patentable subject matter. His claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter – a product of human ingenuity…

(emphasis added).

The Chakrabarty decision revolutionized the biotechnology industry in the United States. Chakrabarty was quite clearly the turning point for the biotech industry. The fact that the biotech industry has flourished in the United States and languished elsewhere shows the importance of an expansive view of what is patentable subject matter.

But in Myriad the Supreme Court turned their back on the fundamental holding in Chakrabarty. This is objectively and quite clearly true because Justice Thomas, writing for a unanimous Court, explained that the isolated DNA claimed by Myriad was nonnaturally occurring. Justice Thomas wrote:

Nor are Myriad’s claims saved by the fact that isolating DNA from the human genome severs chemical bonds and thereby creates a nonnaturally occurring molecule.

(emphasis added).

Thus, the Supreme Court quite directly contradicts the reasoning of Chakrabarty in Myriad. Thomas explains that it is a fact that isolated DNA is nonnaturally occurring, but still nevertheless not patent eligible.

Whether we like it or not, the very foundation of the Supreme Court’s decision in Chakrabarty has been overruled, or at the very least significantly cut back. Arguments to the contrary are simply wishful thinking and ignore the explicit language of the Myriad decision.

I think anyone who is honest knows how this passage will be used by defendants and challengers at the USPTO and in the district courts. If the PTAB decision on covered business methods is any indication the PTAB is quite anti-patent. See Did the PTAB Kill Software? We also know that many, if not a majority, of district court judges are anti-patent. We also know that many judges on the CAFC are increasingly taking anti-patent positions. See, for example, Federal Circuit Nightmare in CLS Bank. This will be offered by challengers and accepted by judges who do not like patents as meaning that something that is nonnaturally occurring and man-made is not necessary patent eligible. That fundamentally undercuts the ruling in Chakrabarty.

Soon we will see these arguments made and adopted. So patent owners had better figure out a response. It won’t be persuasive in court to simply pretend the Supreme Court didn’t say what they clearly said, or that such a viewpoint is “the sky is falling” paranoid nonsense. Likewise, it will not be persuasive to attempt to distinguish these cases based on the fact that Chakrabarty related to a genetically modified bacteria and Myriad related to isolated DNA. The fundamental holding in Chakrabarty was that if what is claimed is nonnaturally occurring it is patent eligible. After Myriad the fact that it is nonnaturally occurring does not mean that what is claimed is patent eligible. Thus, there must be more than something that is nonnaturally occurring to be patent eligible.

Patent attorneys and clients need to wake up and stop fooling themselves. The landscape has significantly changed. Wishing things were different and pretending that the Myriad ruling doesn’t say things that are clearly stated is not a winning strategy. A winning strategy is to engage. That means pushing forward and forcing the discussion both with Members of Congress and with the Courts. That means engaging in lobbying efforts and filing amicus briefs. If you pretend that nothing has changed eventually you will wake up one day and very little will be patent eligible. So who is fooling who exactly?

In the meantime, strategies need to be designed to put applications in the most favorable light. That means that claims need to closely track the language of 35 USC 101, which means that for software you need to claim “a machine comprising…” and for biotechnology innovations such as isolated DNA you must claim the invention as “a composition of matter comprising…” Additionally, a variety of claiming techniques can and should be used. We can’t know where the law is ultimately going to wind up, and by the time that we do know it will be to late to go back and add disclosure and vary the claims.

The pendulum will likely swing back at some point because if it does not there will be nothing left to the patent system. Interpreted to the extreme the Supreme Court’s decisions in Mayo and Myriad render a great many things patent ineligible. If that message didn’t get driven home by the PTAB’s decision in the first ever covered business method decision I don’t know what else could possibly cut through to prove the point.

All is not well, the erosion of patent rights continues, and we do no favors by trying to tell clients everything is fine. We need to enlist clients, explain to them that it is unfathomable that at the end of the day these decisions will be interpreted as they are actually written, but that in the meantime we must engage on a variety of fronts, both at the USPTO, in the halls of Congress and by speaking up and participating in important litigations and appeals even when our own patents are not at stake.

The Author

Gene Quinn
is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. Gene is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 30 Comments comments.

LuiJuly 14, 2013 9:42 am

What if you place emphasis on ingenuity instead? Same wording different effect, no? I say Chakrabaty was cut back by that passage and not overruled. Thus I do not foresee a break in the patent system and no need for a future pull back. Hakuna Mutata.

Michael RischJuly 14, 2013 10:16 am

I’m not convinced. Even if you took the naturally occurring DNA and put it into the plasmid, the reasoning of Myriad (and Chakrabarty) is the same – the lab technician made something that doesn’t exist in nature. If you claim the DNA separately, no dice, but put it in a plasmid and you’re OK. I don’t see anything in Myriad that overturns that.

MDJuly 14, 2013 11:21 am

I’m bothered by the title to the piece.

Before we ask “why” SCOTUS reversed Chakrabarty, I think we need to ask “whether” or “how” it reversed it. Michael Risch above, thanks but I am no more convinced by your line as by Gene’s. For me there is a “letter vs spirit” or a de Minimis issue going on here. The claimed isolated DNA fragment is not strictly natural but not “not natural” enough to count as truly not natural. In substance, it is still natural rather than non-natural.

But even when we are all satisfied that Myriad has indeed in fact reversed Chakrabarty, I still don’t quite see in the piece any discussion or explanation of why SCOTUS felt it necessary to reverse.

Eric MJuly 14, 2013 11:36 am

I agree with Michael. Although the isolated DNA strands aren’t themselves found in nature, they are “naturally occurring” as part of a naturally occurring whole DNA sequence. One can point to the strand to be isolated. This is distinguishable from Chakrabarty and recombinant DNA in that you cannot find such a bacterium and/or plasmid anywhere on Earth.

I interpret the Court’s reasoning as follows: Just because isolated DNA is technically “nonnaturally occurring” in the sense that it requires human intervention to separate it from DNA, it doesn’t negate the fact that the it occurs in its essentially unaltered form SOMEWHERE in nature (i.e., in the DNA strand itself). This interpretation would not overrule Chakrabarty at all.

Steve MJuly 14, 2013 2:06 pm

I think it’s important to look at the emphasis the court placed on the way that DNA is unique among molecules. For example, when the Court dismisses Myriad’s argument that the isolated DNA is, in fact, a separate molecule that does not exist in nature, the Court points to the claims saying:

“[T]he claims understandably focus on the genetic information encoded in the BRCA1 and BRCA2 genes. If the patents depended on the creation of a unique molecule, then a would-be infringer could arguably avoid at least Myriad’s patent claims on entire genes . . . by isolating a DNA sequence that included . . . one additional nucleotide pair.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S., at ___ (slip op., at 15) (2013).

In other words, the informational content of DNA distinguishes it from other molecules found in nature. This informational content is important both in nature and to the patentee, as the patentee understandably patents a genetic sequence (with some holes/variable portions) and not a particular molecular structure. As the trial court explained:

“The information encoded in DNA is not information about its own molecular structure incidental to its biological function, as is the case with . . . other chemicals found in the body. Rather, the information encoded by DNA reflects its primary biological function: directing the synthesis of other molecules in the body – namely, proteins”. Ass’n for Molecular Pathology v. United States PTO, 702 F. Supp. 2d 181, 228 (S.D.N.Y. 2010).

DNA can be distinguished from other naturally occurring molecules in this way, thereby keeping the Myriad decision narrowly focused to nucleic acids. This is exactly what the PTO has done in its initial response to Myriad.

AnonJuly 15, 2013 10:20 am

Steve M,

Sorry, but you are not correct. You are not an attorney, are you? I mean no disrespect by the question, but you are not showing that you understand how the rule of law works (and how the rule of law is applied to particular facts of a case).

The rule of law here concerns the product of nature judicial exception to patent eligibility. That rule of law will (naturally) be applied to the facts of other cases – and the decision simply cannot be read as narrowly as you would hope to do. That is just not how law works.

Michael RischJuly 15, 2013 10:34 am

Anon – don’t condescend, please. Plenty of legal scholars (attorneys) have made the same argument, and there is no reason why the rule of law can’t be interpreted as Steve M. argues. I’m not convinced that’s the way it will go, but nor would I dismiss it so handily. The Court is very clear that isolation is not really isolation here because the claim was for the informational content. Plenty of smart attorneys have argued that this means if you claim the molecule in a way that emphasizes the molecule and not the informational content, you might have a different story – indeed, the Court’s opinion says as much – and uses that as the justification for barring small cDNA that matches nature. Gene reads that more broadly, to extend to the insertion of such small strands into Chakrabarty, but I’m not convinced. And hence we debate.

Before we start throwing terms like “rule of law” etc., it makes sense to understand what the opinion actually holds, and there’s obviously disagreement about what Myriad holds. I don’t think it is as narrow as _just_ information in DNA, but nor do I think it is as broad as overruling Chakrabarty. And reasonable minds differ on this.

AnonJuly 15, 2013 11:16 am

Michael,

I was not condenscending (even as I noted that it may come across as such), but my point at 6 stands. That is just not how the law works (no matter how many legal scholars or attorneys mistakenly bellieve that way).

And yes, I realize that the way law works can be debated, but just because it can be debated, does not mean that there is credence there (anything ‘can be’ debated).

Michael RischJuly 15, 2013 11:21 am

Sure it is how the law works. It’s why folks used to bright line rules of the Fed. Cir. keep pulling their hair out when the Supreme Court acts. Not everything is a bright line rule, and dicta matters when a new case comes along with facts that are slightly different than before.

AnonJuly 15, 2013 11:29 am

Sorry Michael, I do not understand your response in relation to my post.

My post stands as correct here. This has nothing to do with bright line rules (quite in fact, the comment about ‘bright line’ rules works against teh far too narrow desired take away from the Myriad case).

The rule of law for products of nature is simply not limited by the Myriad decision to human DNA – anymore than the ‘abstract’ rule of law would be limited to only hedging methods under Bilski, or the law of nature rule of law would be limited to medical diagnostic methods under Prometheus

As I indicated, anything can be debated – but such debates are neither reasonable, nor pertinent to discussions of law. Pretending otherwise just does not make it so.

Michael RischJuly 15, 2013 11:47 am

Well, that’s true, but that’s not what Steve M. was saying. Steve M. was saying that you need not necessarily interpret Myriad broadly because the short snippets of cDNA that might be considered “natural” are really specific to DNA and information sequences, whereas OTHER non-natural stuff that seems like a small step from nature (like plopping it into a plasmid, or a longer cDNA strand with introns removed) are still considered non-natural. That, to me, is a perfectly reasonable interpretation of Myriad.

Perhaps (maybe surely, given your last comment) you read Steve M’s comment differently than the way I read it.

But even if I’m wrong, the “rule of law” point only works if you buy a broader application of Myriad to laws of nature. That reading is probably correct, but I don’t think necessarily so. We still just how different from nature the product must be to be patentable, and it may be that everything other than DNA is different enough when isolated and purified that it really is limited to DNA. I doubt that’s how it will shake out, but it’s no more crazy an argument than saying, for example, that Myriad overruled Chakrabarty. Both are a stretch of the reading of the case.

Stan GJuly 15, 2013 12:20 pm

The exceptions to 101 include “natural phenomena” (see Chakrabarthy)… People may duplicate natural phenomena and thus make them, in a sense, “man-made”, but the phenomena themselves do not become inventive. Thus, I can create fire, nuclear fusion, isolated molecules of various substances, but they don’t thereby become man-made in the same way an engineered organism, like Chakrabarthy’s, is. Let’s look carefully at the wording of the exceptions, and the reasoning employed, and we can see that Chakrabarthy and Myriad can be read as complementary. For instance, O2 is a natural phenomenon, in that its form, the structure of the molecule, is not man-made, even when its various instances might be caused by human activity. It remains, as does the string of nucleotides described in Myriad’s claims, in all relevant senses a “natural phenomenon.”

AnonJuly 15, 2013 12:21 pm

I think we agree more than we disagree (at least on soem views!). In fact, your ‘plopping it into a plasmid’ comment is a thought that occurred to me in response to Gene’s view. I look at that as an inventive aspect that would indeed escape from the product of nature doctrine. But such plopping does not fall under the product of nature doctrine because such is clearly doing something with product’s of nature – evidencing the hand of man to create somethign different in kind. Eric M.’s point sounds more in product of nature doctrine.

As to the ‘just how different’ view, I also concur with you – to me, it definitely appears that the Supreme Court refuses to relinquish its ability to shape patent law (notwithstanding any true lack of constitutional question) and this explains the mess of law that 101 currently has become. As I have posted on this blog, when the judicial body charged with creating clarity in patent law can only throw up its arms in disgust (the CLS Bank v Alice case), the Surpreme Court should take some serious pause in just how adamant they should be with their ‘implicit’ writings of patent law. In other words, I think that they have let the ‘turf war battle’ over patents between themselves and the Court of Appeals Federal Circuit get out of hand and become a philosophical – rather than legal – battle.

Gene makes some good points about the fact that Congress has not explicitly written out of eligibility neither business methods, nor software – having had the opportunity to expressly do so ‘at their leisure’ (and at least as recently as the ‘technical corrections’ bills to the AIA). And in contrast, and to draw back to your last comment, the elephant of overruling Chakrabarty is NOT hiding in the mousehole of Myriad – I fully agree that Gene’s view as such belongs in the same camp as Steve M.’s.

EGJuly 15, 2013 1:08 pm

Sorry, but Myriad doesn’t overrule Chakrabarty, at least not with respect to what was claimed in Chakrabarty. In Chakrabarty, you have 4 plasmid vectors from 4 different organisms being inserted into a host organism having none of those 4 plasmid vectors. Admittedly, Chakrabarty had to isolate those plasmid vectors from 4 other organisms, but once inserted into the host organism, you have a truly “man-made” creation that nature didn’t make. It’s also why the ruling in Funk Brothers is distinguishable as what you had there was a mixture of unaltered inoculants.

By contrast, what SCOTUS in Myriad deemed patent-ineligible was just the isolated DNA sequence. As anon correctly points out, the “product of nature” doctrine treats that as a difference in “degree” (patent-ineligible), not “kind” (patent-eligible). Chakrabarty’s claimed invention falls in the “difference in kind” (patent-eligible) category.

AnonJuly 15, 2013 2:07 pm

EG,

The kudos belong to you. Your past reference to your paper, as well as my personal discussions with Hal Wegner (and his personal involvement in the In re Bergy and Chakrabarty cases have been catalysts in informing my understanding.

BrianJuly 15, 2013 2:57 pm

Interesting viewpoint, Gene. Some solace can be taken from Scalia’s concurence-in-part. As least he acknowledges that he doesn’t understand the science. The PTO could take Scalia’s remark and generate policy that looks at anticipation instead of eligibility. The current interim Mayo guidance offers little help to those in the trenches and I can only imagine how many 101 rejections are floating around in 1600. We tackled this in the 90’s when we put out the utility/EST guidelines. The only way to provide guidance was to put out examples and permit public comment. I hope that the Office takes this approach again and the furor will fade as technology marches forward. Right now, it is possible to evade letting judicial legislative action go too far through good public policy. While district courts might take Thomas’ decision as license to legislate, the effects could be mitigated by a solid guidance document. As we go forward, we can only hope congress avoids the temptation to carve up 101 as well.

Gene QuinnJuly 15, 2013 3:09 pm

EG-

There is really no arguing that Chakrabarty stood for the proposition that nonnaturally occurring subject matter is patent eligible. There is likewise no arguing that Myriad says that even though the claim covers something that is nonnaturally occurring it is nevertheless patent ineligible. So the fundamental rule of law announced in Chakrabarty does not survive Myriad.

Time will tell, but I think we all know how the patent haters are going to use Myriad. Can you distinguish Myriad on the science and on the reality of what is claimed? Sure. Will district courts do that? Not a chance. Myriad gives those who are predisposed to despise patents all they need to drive a truck through Chakrabarty. I don’t think it does any good to presume that district courts… or even the PTAB for that matter… will do the heavy lifting and reach the intellectually honest decision. There is absolutely no evidence that they will and voluminous evidence from district court to PTAB to CAFC that many, if not most, judges will simply strike down patents.

-Gene

Michael RischJuly 15, 2013 3:27 pm

Well, I can’t quibble with the second half – that district courts will screw things up and that there is unclarity with respect to complex extracts (such as the primers that Myriad claimed in its new cases, but are based on gDNA). A good chunk of my scholarship has been dedicated to that point.

That said, “There is likewise no arguing that Myriad says that even though the claim covers something that is nonnaturally occurring it is nevertheless patent ineligible” is incomplete at best, and false at worst. Yes, it is true that Myriad said that in SOME cases the cDNA might SO SHORT that it would be ESSENTIALLY IDENTICAL to that which is in nature. But we’ve had that rule since the Tungsten case if not before. Even Parke Davis supports that outcome. That is not overruling Chakrabarty, especially given the fact that Myriad held that the cDNA at issue, though barely different from gDNA and essentially the same information, was eligible.

Now, maybe, your view was that the fundamental rule of law in Chakrabarty was broader than I think it was. Courts have never, ever held that simply by isolating something it becomes eligible even if it is the same as in nature, and any reading of Chakrabarty to that end was just waiting to get swatted down at some point – it probably would have right then had Bergy not gone away at the last minute.

Gene QuinnJuly 15, 2013 3:32 pm

Michael-

I think you are either missing or ignoring what Justice Thomas actually wrote on page 14 and I quote above. He said that it is a fact that isolated DNA is nonnaturally occurring. He also said that the fact that it is nonnaturally occurring does not mean it is patent eligible.

So saying what I wrote is incomplete or false is not true. This is what the Supreme Court stated. Why everyone is ignoring that part of the decision is really quite a mystery to me because we all know that district courts and those on the CAFC who are anti-patent won’t miss that statement. Neither will the patent challengers.

-Gene

Michael RischJuly 15, 2013 4:09 pm

No, I am familiar with that part, but that viewpoint is no different than the law always was – dating back to ex parte lattimore. Natural product “jurisprudence” has always been about just how purified the product must be. This is the first and only Supreme Court case to weigh in on that question. Chakrabarty certainly didn’t – Bergy was supposed to do that. And so I return to my original point – if you thought that Chakrabarty overruled Lattimore, the Tungsten case, Parke Davis, etc., then you are right – Myriad indeed makes clear that Chakrabarty did not stand for that. The reason I think Myriad doesn’t push the envelope is a) most cases I’ve read didn’t apply Chakrabarty that way, and b) the gDNA to cDNA jump is so small, that it is hard to see some sort of broad mandate to strike down everything that might have anything natural in it.

But, as you note, time will tell, and I’m completely with you that courts can screw this up.

step backJuly 15, 2013 4:21 pm

What Myriad did was over-rule 35 USC 101 as understood by scientists.

If you ask a scientist whether a small molecule (i.e. DNA fragment) is “different” from a large one (i.e. full double helix DNA), he must say yes.

If you ask a scientist whether the small molecule is naturally occurring when in nature it does not occur, he must say yes.

Only the Supremes in their make-believe world get to say the opposite of the way the real world is.

If something is different and it was not there before, then it is “new”.
If something is not naturally produced in the wilds of Nature, then it is not naturally occurring.

step backJuly 15, 2013 4:22 pm

sorry. typo. 2nd “must say” should be a “no”.

Michael RischJuly 15, 2013 4:24 pm

Step back – I’ve met many, many, many scientists who flat out disagree with you. Many of them wrote amicus briefs to the court.

MDJuly 16, 2013 2:42 am

Can we all agree then that, in the context of patent-eligibility, to ask the question “Occurs in nature: Y/N?” is so catastrophically bad it is not even wrong?

Is it anything to be surprised about then, that the District Courts will (according to the consensus above) make a pig’s ear of eligibility, when SCOTUS is not competent to explain to them how to do it.

Gene Quinn wants me to “speak up”. All very fine and dandy but what, specifically, shall I then advocate, as concrete measures to improve the situation? Sending the members of SCOTUS on a training course?

step backJuly 16, 2013 6:13 am

Michael Risch,

Agreed that numerous scientists will opine differently as to the ultimate question of patent eligibility (based on their limited knowledge of, and ignorance about, patent law).

But to not say that a smaller molecule with a fewer number of atoms, with a lower mass, lower volume, less embedded energy due to fewer number of bonds, etc. is not “different” from a larger molecule with greater mass, atom count, bonds count, etc. is plain insanity, not science.

AnonJuly 16, 2013 8:48 am

MD,

I find two things wrong (critically wrong in tandem) with your statement “Can we all agree then that, in the context of patent-eligibility, to ask the question “Occurs in nature: Y/N?” is so catastrophically bad it is not even wrong?”

1) You suggest a universal ‘agreement” that the question itself is “not even wrong.”
2) Your agreement is in the wrong direction from long understood US jurisprudence.

Do you understand the driver behind the judicial exceptions to patent eligibility?
Do you understand the phrase “warehouse of nature belongs to all men?”

KevinJuly 16, 2013 1:28 pm

I may not be as articulate or experienced as many of you, so go easy.

So at least to me, the concept of “naturally occurring” is closely related to a “fundamental law of nature.”

The patent eligibility of a fundamental law is not a bright line. As the court has recognized, at base, every patent relies on a fundamental law of nature, so simply relying on a fundamental law does not make an invention patent ineligible. But at some point, the number of steps between the fundamental law and the invention becomes too few and the invention become patent ineligible. In other words a grey line.

Now the Supreme Court in Myriad has said that the bright line rule of naturally occurring is not so bright after all. Instead, there is some continuum on which if the claimed invention is too close, or too few steps, from a naturally occurring compound it is patent eligible. This logic seems to fall in line with the logic behind a fundamental law of nature.

I agree with Gene that this will result in a perceived paring back of patent eligibility. But at least to me this just seems like the normal ebb and flow of patent eligibility, and not a dire end of world decision.

Gene QuinnJuly 17, 2013 12:12 pm

Kevin-

I agree with you regarding what the Supreme Court has been saying, which is why I am really quite frightened. To quote you, SCOTUS seems to clearly be saying that when “the number of steps between the fundamental law and the invention becomes too few and the invention become patent ineligible.” The problem is that this analysis all occurs under 101 and there is no intellectual, logical or legal framework that bounds such an open ended determination. The framework that we have that provides for boundaries is 102 and 103 to determine novelty and nonobviousness. But SCOTUS is trying to push all of this into 101. Not only does that make 102 and 103 superfluous, but taken to its extreme also means that nothing is patent eligible any more. As the PTAB explained in SAP/Versata they view the Supreme Court test in Mayo as requiring them to ignore all the conventional items of a claim and then seeing what, if anything, remains. Determine patent eligibility based on what, if anything, remains after ignoring the conventional, tangible items. That is a recipe for finding everything patent ineligible because on some level everything is a combination of conventional items, albeit in a different and unique way.

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